Category: UKIPO

There are a number of dedicated email addresses used by the UK IPO in their day-to-day activities. As I get older, my already over-loaded brain refuses to remember anything with an “@” (which either the Dutch or Germans allegedly call a “monkey’s tail”) . I will therefore set them out below.

[The @ signs below have all been replaced with [at] to prevent crawling by automated spam-bots.]

In general, all emails should be a plain text email message (RFC822-compliant). The UKIPO will not accept MS-TNEF/RTF format messages or HTML format messages. Nor will they accept messages that are encrypted or digitally signed. Make sure you change your email settings appropriately.

The UKIPO will send a return email message confirming receipt of the any sent email – do not assume your email has been received until you receive this.

Extensions

Extensions of time under Section 117B (e.g. for examination reports): pateot[at]ipo.gov.uk

Form of email required

Example subject line: “Extension of time under s.117B for patent application number GBYYXXXXX.X”. For requests under section 117B(4) add the word “DISCRETIONARY” in capital letters.

Withdrawal

Form of email required

The body text of the email message should contain a statement of withdrawal that is not ambiguous or conditional. Such a statement could read:”I withdraw patent application number GBYYXXXXX.X”.

If you wish to file a subsequent application, and use this as a basis for a priority claim, then, inter alia, the withdrawal of the application should be made without leaving any rights outstanding. This can achieved using a statement such as “I withdraw patent application number GBYYXXXXX.X without leaving any rights outstanding”. Please note that making this statement rules out the possibility of later making a request to correct the withdrawal of a withdrawn application (resuscitation) or to request reinstatement of an abandoned application (i.e. leave any withdrawals to a professional).

The email message should also contain some indication that the person withdrawing the application is authorised to do so, eg. “I am the applicant / the applicant’s agent for the application”.

The email message should contain no attachments and the request to withdraw the application should not be contained in an attachment. The request should be made in the body of the message.

Third Party Observations

For submitting third party observations under Section 21: section21[at]ipo.gov.uk

Form of email required

Example subject line: “Third Party Observations under s.21 for patent application number GBYYXXXXX.X”.

Observations can either be provided in the body text of the email or in an attachment. The attachment should preferably be in one of the following formats: MS Word, WordPerfect, PDF or plain text (.txt/.rtf).

Amendments

Filing amendments to a patent under Sections 27 or 75: litigationamend[at]ipo.gov.uk

Form of email required

Example subject lines: “Proposal to amend patent number GBXXXXXXX under s75 before the courts [or the comptroller]” or “Proposal to amend patent number GBXXXXXXX under s27” as appropriate.

The text may be provided as an attachment to the email.

Use of “Track Changes” is encouraged.

Accepted formats, inter alia, MS Word, WordPerfect, and PDF.

Observations on Patent Office Opinions

Filing observations for a UKIPO Opinion: opinions[at]ipo.gov.uk

Form of email required

Example subject line: “Observations relating to Opinion No. [NN/YY]”.

Observations can either be provided in the body text of the email or in an attachment. The attachment should preferably be in one of the following formats: MS Word, WordPerfect, PDF or plain text (.txt/.rtf).

If you need to file confidential information relating to a published application or patent at the UK Intellectual (i.e. Patent) Office, you must make a request for confidentiality at the time of filing the document containing the information.

Rule 53 allows a request for confidentiality to be made on filing the document or up to 14 days after this date. However, due to the electronic filing systems of the UKIPO, any confidential document not accompanied by a request for confidentially will be open to public inspection until a request is made.

This was set out in a Practice Notice issued in April 2007 (see page 42 of this document):

From 1 April [2007], any document filed in connection with a published patent application or a patent is open to inspection on filing. However, it remains possible to make a request for confidentiality at the time of filing the document. If such a request is made, the document is kept confidential while the request is considered. It also remains possible for confidentiality to be requested up to 14 days after the document has been filed. The document will have been open to inspection in the meantime, but will become confidential once a request has been made and will remain so while the request is considered. The 14 days for making a request continues to be extendable at the comptroller’s discretion.

Therefore, if you do need to keep information confidential, make sure it is clearly indicated in a covering letter.

A Vietnamese priority application was filed on 7 January 2004. The applicants wanted to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetabled the end of the priority year as one of 14 or 17 January 2005; both dates being after the actual deadline of 7 January 2005. The patent agents only began to prepare the PCT application on 8 January 2005 and by 13 January 2005 they had realised they had missed the 12-month priority window.

UK Decision

At the time, UK patent law allowed a request for a late declaration of priority under s.5(2B). A late priority claim could be made if, inter alia, a UK application was filed within two months of the expired priority period (i.e. by 7 March 2005) and it could be shown that the applicant’s failure to file the application was unintentional.

The Judge agreed with the hearing office’s finding that there was no unintentional failure to file a UK application, the failure related to a PCT application and the filing of the UK application was intentional based on this failure. At the time there was no mechanism to request a late declaration of priority under the PCT.

PCT Reforms

On 1 April 2007, Rules 26bis.3 and 49ter allowing the restoration of a priority right under the PCT came into force (see page 55 of this document).

Let us see what happens when we take the Abaco facts while adding 5 years to the dates:

Revised Facts

A Vietnamese priority application was filed on 7 January 2009. The applicants want to file a PCT application before the end of the priority year. The Australian patent agents mistakenly timetable the end of the priority year as one of 14 or 17 January 2010. The patent agents only begin to prepare the PCT application on 8 January 2010 and by 13 January 2010 they realise they have missed the 12-month priority window.

What can we do?

1. Restore the right of priority upon filing the PCT application under PCT Rule 26bis.3:

As set out here, Australia as a Receiving Office (RO) under the PCT accepts requests for restoration of the right of priority under Rule 26bis.3. Hence, the Australian patent agents can file a PCT application with the Australian Patent Office (APO) as RO. The application must be filed, and the request must be made, within two months of the expiration of the priority period, i.e. by 7 March 2010. The APO applies national standards relating to missed time limits (see page 7 of the AU PCT Guide), which are equivalent to at least the “unintentional” standard. The APO charges a fee for making the request. Prima facie it is likely the request will be accepted.

When the application enters the national phase in the UK, the UK Intellectual Property Office (UKIPO) should accept the late declaration under 49ter.1 (presuming the UKIPO does not dispute the APO’s findings). See paragraphs 6.26 and 13.73 of the UKIPO’s Formalities Manual.

2. Restore the right of priority upon filing the UK national phase application under PCT Rule 49ter.2:

File a Form 3 within one month of entering the UK national phase, together with a fee (£150) and evidence of the Australian agents’ errors. Prima facie, the facts would likely support a finding that the failure to file the PCT application was unintentional. Ideally, the evidence should be in the form of an affidavit or witness statement signed by the Australian agents.

This can also be performed if the RO were to refuse the restoration request.

There you go. Just one of the reasons why the world we live in today is not as bad as yesteryear.

Following my post on the supply of Search Results to the EPO, I thought it would be useful to clarify the procedure for the supply of related search reports at the UKIPO. This may be of particular use to US patent attorneys or agents.

The procedure at the UKIPO is not immediately apparent and requires a little investigation. I will summarise the procedure then provide links to the relevant legal basis.

The bottom-line is that all related search reports available at the time of replying to the first examination report should be supplied to the UKIPO.

Procedure

The procedure is as follows:

The UK IPO issues a search report. The search report contains a standard paragraph requesting official search reports produced by other patent offices on corresponding applications (“related search reports”).

The request can be met by filing a copy of the related search report(s) or by emailing the UKIPO the details of the citations in the search report(s) (see the issued search report for an email address). It is not necessary to supply the citations themselves.

The request is time-limited and is active up to the time of responding to the first examination report. This means that you need to provide related search reports that have been issued up to the time of responding to the first examination report. As a guide the first examination report is typically issued 2 to 3 years from the effective (priority or filing) date of the application (if proceedings are not accelerated).

In practice, any related search reports available at the time should be filed together with the request for substantive examination (due six months after publication). This allows them to be taken into account during substantive examination. Any search reports issued after the request for substantive examination (if it is likely examination has already started) should be filed with the reply to the first examination report.

If the first examination report is a notice of allowance (issued under s.18(4)), search reports should still be filed. The cut-off date is two-months from the issue of the s.18(4) report.

Exemptions

The following search reports need not be filed:

search reports that show a nil response (i.e. no cited documents – it is not clear whether an “A” citation would be considered a “nil response”);

search reports that have been published by WIPO or EPO (i.e. in an International or European Search Report – the UK Examiner can obtain these via the EPO’s Online File Inspection System); and

search reports that have been provided on a parent application (i.e. a parent UK patent application if the present application is a divisional application).

Sanction

No sanction for failing to supply search reports on related applications is discussed. However, failing to supply search reports may be held against the proprietor of a patent in subsequent infringement proceedings in the UK (e.g. may limit damages available or prevent amendment – s.63(2) and s.75).

Basis for Requirement

The procedure was set out in a UKIPO Practice Notice first published in Patents and Designs Journal No.5993 on 31 March 2004. Helpfully, this Notice is not available in the Practice Notices section of the UKIPO website but can be found on page 30 of the Appendix to the Manual of Patent Practice. Paragraphs were added to search communications from 1 July 2004.

The legal basis for the request is given as:

82.—(1) Except where the Act or these Rules otherwise provide, the comptroller may give such directions as to the management of the proceedings as he thinks fit, and in particular he may

* By referring to software in inverted commas I am indicating that the term “software” patent is not often used within the profession, which prefers the terms “computer programs” or “computer-implemented inventions”.

With regard to protecting computer games at the UK IPO see the Practice Notice:

As well as changes to fee amounts, a number of new fees are introduced:
PF4 – £350 – Continuation of patent proceedings before the Comptroller
PF21 – £50 – Recording assignments, licences and security interests
PCT Application – £150 – Request for restoration of a right to claim priority
Reductions for filing forms PF9A and PF10 online increase from £10 to £20.

In the press-release you’ll be pleased to see my Tottenham neighbour Dave get his mandatory soundbite.

Patent Forms 9A and 10 have been updated by the UKIPO to include a request for consent to share the results of the search / examination with other patent offices.

PF9A has a new section 7; PF10 a new section 4; each feature a simple “yes”/”no” check box. Updated forms can be found here. The forms came into force on 4 Oct 2009 (announcement in the Journal was provided today).

I believe worksharing deals have been arranged with the Australian and Canadian Patent Offices to allow office-led sharing of search/examination documentation. I do not know of any sanctions for withholding consent.

The blurb on the back of the forms is as follows:

“In order to promote efficient and high quality patent processing internationally, we are cooperating with other patent offices to share the results of examination where they are available. If you are requesting that substantive examination takes place before your application is published we may accordingly receive a request from another patent office for the details of the examination we have carried out before your application is published and we could not provide those details without your consent. Any sharing will be carried out on a confidential basis and the results will not become publicly available through the other patent office before publication takes place in the UK.”

In other news: from 4th October 2009, a £10 fee reduction will be introduced for e-filed UK patent applications or e-filed search or examination requests. There is also a new Priority Document Access Service from WIPO and some amendments to Civil Procedure Rules (CPR) Part 63.